The General Court has dismissed an appeal brought by Hasbro, Inc. (Hasbro) against the European Union Intellectual Property Office (EUIPO) following its decision that repeat trade mark filings for 'MONOPOLY' constituted bad faith.
Background – Hasbro takes a chance
In April 2010, Hasbro applied to register an EU trade mark (EUTM) (in classes 9, 16, 28 and 41) for 'MONOPOLY'. When the application was made, Hasbro already owned three other 'MONOPOLY' EUTMs. Whilst the application partially designated new goods and services, there was considerable overlap with earlier marks. The application achieved registration in March 2011.
In August 2015, Croatian company Kreativni Dogadaji d.o.o (Kreativni) applied to the EUIPO for a declaration that the most recent 'MONOPOLY' EUTM was invalid, on the ground that Hasbro's repeat filing of 'MONOPOLY' applications, designating broadly the same goods and services, constituted bad faith.
With EUTMs, a principle of 'use it or lose it' applies. EUTMs that have been registered for over five years become liable to revocation on grounds of non-use, unless genuine use of the mark can be evidenced. To side-step this, some businesses file new applications when their existing registrations are approaching the five-year mark. This process is known as evergreening and has been the subject of various disputes, including the high profile Sky v Skykick litigation (you can read our commentary on this here and here).
Hasbro gets out of jail free
At first instance, the EUIPO's Cancellation Division rejected the application. It found that protecting the same mark for 14 years was not, per se, an indication of an intention to evade the genuine use regime and that Kreativni had not evidenced that Hasbro had acted in bad faith when its application was filed. Kreativni appealed the decision to the EUIPO Second Board of Appeal (BoA).
In a reversal of the first instance decision, the BoA granted the invalidity declaration, finding that it was Hasbro's intention "to take advantage of the EU trade mark rules by artificially creating the situation where it would not have to prove genuine use of its earlier marks for the goods and services".
General Court takes its turn
Hasbro appealed to the General Court (GC), which subsequently affirmed the BoA's decision.
The GC held that repeat filings to avoid consequences of non-use of earlier marks is a relevant factor for assessing bad faith. The GC relied on its decision in Pelikan (T-136/11), in which it held that bad faith can be found in circumstances where an EUTM application is filed to avoid the consequences of total or partial revocation of earlier registrations for non-use.
This decision expands guidance in earlier case law (see C-529/07 Chocoladenfabriken Lindt & Sprüngli) regarding when an application is deemed to have been made in bad faith.
Whilst the concept of 'evergreening' constituting bad faith is nothing new, the decision is a useful reminder to brand owners that the EUIPO (and indeed, its UK counterpart) is very much alive to the tactic of repeat applications and will not shy away from declaring marks that are filed on this basis as invalid.
Trade mark applicants should be mindful of this when re-filing applications that are broadly in line with earlier registrations that they hold and that such practices could lead to the partial or even total cancellation of their registrations.
The full judgment, Case T-633/19, Hasbro, Inc v European Union Intellectual Property Office (12 April 2021), is available here.
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